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The core issues in four very interesting consolidated appeals brought by Navy Exchange Service Command (“NEXCOM”) was whether the pixilated pattern in the marks is functional as a matter of law under Section 2(e)(5) of the Trademark Act, 15 U.S.C. § 1052(e)(2).

The mark was described in the applications as in whole, or in part, as consisting of irregular block-shaped pixels in a four-color pattern consisting of black, deck grey, light grey, and navy blue.

The Examining Attorney argued that the marks are functional because they hide stains and wear and tear. Applicant contended there was no evidence to support the refusal, and that any functionality was an incidental feature inherent to any patterned material.

“In general terms, the design or trade dress of a product is functional and cannot serve as a trademark if it is essential to the use or purpose of the article or if it affects the cost or quality of the article.”

While the Examining Attorney introduced evidence regarding the Navy’s need for a clean uniform and the like, only one of the references was specifically to the pattern in the marks at issue. The board noted that many other requirements that Navy uniforms that have nothing to do with fabric design. And it concluded, “[q]uite simply, there is nothing in applicant’s statements that persuade us that applicant’s applied-for color pattern design is essential to the Navy’s requirement for a neat and clean uniform.” Applicant also showed that there were numerous other designs available that would similarly mask wear-and-tear and stains.

In sum, the Board found for Applicant:

After carefully considering all the arguments and
evidence submitted by applicant and the examining attorney,
including those not specifically discussed, we cannot
conclude that the examining attorneys have met their burden
of establishing prima facie cases of functionality. In re
R.M. Smith, Inc., 734 F.2d 1482, 222 USPQ 1, 3 (Fed. Cir.
1984). See also In re Howard Leight Industries LLC, 80
USPQ2d 1507, 1509 n.7 (TTAB 2006) (“In ex parte proceedings
before the Board, … the Office has the initial burden of
establishing a prima facie case of functionality.”). While
the color pattern design in applicant’s marks may perform
the incidental function of masking stains and wear and tear

on the fabric and clothing items identified in the
applications, it need not be devoid of any function in
order to be registrable as a trademark. See In re Morton
Norton Products, supra (the mere fact that a product
configuration has utility, or aspects of a product are
functional, does not render the configuration
unregistrable). The examining attorneys quite simply have
not shown how applicant’s particular color pattern is
functional or how it would hinder competition.